Trademarks may be obtained for distinctive words, phrases or symbols which serve to identify a particular source of goods. Service Marks may be obtained for distinctive words, phrases or symbols which serve to identify a particular source of services. For convenience in the discussion herein, both service marks and trademarks are generically referred to as trademarks.
Failure to register a trademark with the United States Patent and Trademark Office may result in the loss of substantial rights. In addition, failure to determine whether a trademark is already being used may leave an individual or company open for a claim of trademark infringement.
The value of a trademark is clear from well-known examples. Why does Coca Cola sell for twice as much as generic cola? The trademark makes the product easily recognizable, and adds great value to the product.
The Trademark Process
This entails performing a comprehensive database search of records in the United States Patent and Trademark Office for marks that may be confusingly similar to your trademark. The fees for the search are:
|Attorney’s Fees:||$300 – online search of Federal Registers with oral report|
A comprehensive analysis is made by an attorney and a legal opinion is provided regarding whether or not the mark may be entitled to registration in light of the marks found during the search. Note that additional fees may be paid to expand the scope of the search to include state, common law, Internet domains, and International marks.
Two different types of trademark applications may be filed depending on whether or not the client has actually used the mark in interstate commerce. An “intent to use” application is based on the client’s bona fide intent to use the mark in the near future. An “in use” application is based on the client’s actual use in the United States in interstate or international commerce (that is, in commerce that Congress can regulate). A trademark application is filed in a particular class that encompasses goods or services of a particular type. For example, assume that a person develops a new board game that can be sold as a regular board game in a box, or as computer software that runs the game on a personal computer. A single trademark application with goods in two classes, one in the class that includes toys and games, and a second in the class that includes computer software, could be filed. In the alternative, two separate trademark applications could be filed. This could be a good choice if the person in the example above has already sold the new board game in interstate commerce but had not yet sold the computer software. An estimate for filing one trademark application follows:
|Attorney’s fees, 1 class:||$450|
|Government Filing Fee, 1 class||$250-350|
|Estimated Total for Filing in 1 class||$700-800|
Once a trademark application has been filed, it is assigned to a Trademark Examining Attorney. The Trademark Examining Attorney will typically perform a search of active marks in the records of the United States Patent and Trademark Office to determine if your mark is entitled to registration. Some trademark applications are allowed by the Trademark Examining Attorney on the first pass. However, some are refused registration by the Trademark Examining Attorney, and require additional work to continue prosecution. Should additional prosecution of a trademark application become necessary, an estimate will be sent to the client for the work that needs to be done.
For a trademark application based on an intent to use the mark, additional paperwork will be required to show use of the mark in commerce or to request an extension of time. Attorney’s fees for these filings are estimated to be approximately $300 per filing; and government filing fees for these documents is currently $100-$125, which is subject to change.
Once a mark is approved for registration and actual use in interstate commerce is claimed to the satisfaction of the Trademark Examining Attorney, the Trademark Examining Attorney issues a Notice of Publication that indicates the date on which the mark will be published in the Trademark Gazette. Any parties that feel they may be harmed if your mark is registered may file an opposition to your registration within 30 days of publication.
If no opposition is filed, your mark will be registered, and a Certificate of Registration will be issued by the United States Patent and Trademark Office.
Some declarations must be filed within a certain time period from registration. Attorney’s fees for these filings are estimated to be approximately $300 per filing; and government filing fees for these declarations is currently $100-$300, which is subject to change.
A trademark is valid for ten years from the date of registration, assuming all requirements have been met (such as filing the required declarations in Phase 7). Trademarks may be renewed for subsequent 10 year terms. The fees for a renewal will be estimated at the time the renewal is required.